The Demise of the Innovation Patent

The Australian Parliament has passed legislation killing the low cost innovation patent system, bowing to arguments from the Productivity Commission.

Patent Attorneys deal with multiple interests, including but not limited to the interests of our clients who strive to make products and provide services in a competitive market place which generally rewards commercially valuable solutions to problems, and that’s where the law and Intellectual Property (IP) protection can have an influence.

The skill set of Patent Attorneys includes an understanding of the technology and science used to deliver the solutions to problems, a thorough understanding of the law and how the courts interpret that law even when it includes that technology, and most importantly we understand the commercial implications of the exercise of valid IP rights in the market place.

IP law has changed many times in my years as a Patent attorney: the Circuit Layouts Act 1989; the Patents Act 1990; the Petty Patent born in 1979 was laid to rest and the Innovation Patent came into being in 2001; The IP  Laws Amendment (Raising the Bar) Act 2012 (changed the standard for judging the novelty and obviousness of a standard patent); Plant Breeder’s Rights Act 1994; Trade Marks Act 1995; Designs Act 1906 became the Designs Act 2003; and associated Acts such as the Copyright Act has been revised many times including the Copyright Amendment (Computer Programs) Act 1999; The Trade Practices Act 1974 was amended many times and eventually became the Australian Competition and Consumer Act 2010. As well, many international agreements have been entered into by the Australian Government including TRIPS, URDP, Budapest Convention, etc. etc. etc.

The critical Bill implementing the death throes of the Innovation Patent is the IP Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 which was tabled in the Senate on 25 July 2019 and the last reading was the first reading in the House or Representatives on 16 October 2019.

The legal IP landscape changes all the time and the Innovation Patent will soon become an historical IP anomaly.

In deference to the uproar of indignation and concern about the passing of the Innovation Patent, I say it is time for ACTION.

The Bill that will abolish the Innovation Patent will likely be enacted and assented to early in 2020. Thus there will be four phases in the process of the death of the Innovation Patent.

The first phase occurs from today (as you read this in November/December 2019) until the date of assent and becomes law next year. Until then you can still file an Innovation Patent application and begin its eight year life immediately, you can still file a Provisional Patent application (which you MUST complete by filing a Standard Patent application BEFORE the end of the 12 month life of the Provisional Patent Application); and you can still file a Standard Patent application from which you can divide out an Innovation Patent application within 8 years of the filing date of the Standard Patent.

The second phase commences the day the Act is given assent and becomes law. For exactly 18 months[i] (ending likely date in July 2021) nothing changes and you can still file an Innovation Patent application; you can still file a Provisional Patent Application but you must then file an Innovation Patent Application (which must be the basis for filing a Complete Patent Application before the end of that previously mentioned 18 months), or you can file a Complete Patent Application from which you can divide out an Innovation Patent at some future time within 8 years of the Complete Filing Date.

The third phase commences 18 months after the date of assent (likely a date in July 2021) and an Innovation Patent Application can be filed BUT ONLY if they are a Divisional of a Standard Patent Application; or the Standard Patent Application is converted (and cannot be back converted) into an Innovation Patent Application.

The fourth and last phase ends all Innovation Patents Granted or Certified sometime in 2028.

Put simply, see your patent attorney ASAP if you want to know more about Innovation Patents and when it is best to file one, before you lament[ii] not only the passing of the Innovation Patent, but also your lost opportunity to have an Innovation Patent in your IP portfolio.

By: Bill McFarlane

Partner at Madderns Patent & Trade Marks Attorneys Adelaide

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[i] Dates and periods are yet to become law and amendment is not unusual, making it all the more important to contact a patent attorney to discuss your situation.

[ii] There is a statutory review to be undertaken to assess the impact on Australian small to medium enterprises of abolishing the innovation patent system and the review is required to commence within three months of the legislation being enacted, and must be completed within 12 months.